Timberland Loses Fourth Circuit Bid to Protect Trade Dress for Iconic Boots

Source: Fourth Circuit opinion

The U.S. Court of Appeals for the Fourth Circuit on Monday rejected Timberland’s bid to protect its popular boot design. The court explained that the district court did not err in finding that the company failed to prove the design had acquired distinctive meaning.

While Timberland’s brand name is still protected as a trademark, the widely recognized boot design is not. Also known as “Timbs,” the iconic boot’s cultural significance is undeniable. Most notably, Grammy-winning producer Timbaland’s stage name is a nod to the outfitter.

During its rise in the 1980s and 1990s, the boot was even dubbed “the Air Jordan of boots.” However, according to Monday’s ruling, the boot’s design lacks “a distinctive meaning” that identifies them as Timberlands. While the brand’s distinct tree logo remains protected under the Lanham Act, the boot’s design falls short of being “distinguishable” enough to earn the same protection.

In other words, despite their visibility in popular culture, Timberlands don’t look or function much differently than any other hiking or construction boot.

TBL vs. USPTO

TBL Licensing, LLC first submitted its trademark to the U.S. Patent and Trademark Office (USPTO) ian 2015. In its initial application, the company outlined what it considered to be the boot’s five principal trademark features, including its “tube-shaped ankle collar” and hexagonal eyelets. The application did not include the boot’s unique outsole that features TBL’s already-registered tree logo and “TIMBERLAND” word mark.

TBL’s decision to exclude certain design features of the boot in its application was “possibly strategic,” according to the Fourth Circuit. “Had it included, for instance, the inner ankle collar or the lug sole, the overall risk of a functionality finding likely would have increased,” said the court. However, even excluding the more practical elements of the boot, TBL failed to prove that “the public associates the features TBL did claim exclusively with Timberland,” said a footnote in the opinion.

TBL also omitted its iconic wheat-yellow color from this particular application, as it had already tried and failed to trademark the color.

Finding the design “functional and not distinctive” as a whole, the USPTO’s examining attorney refused to register the design. TBL appealed. The Trademark Trial and Appeal Board (TTAB) affirmed in 2021 and TBL challenged the decision in the United States District Court for the Eastern District of Virginia. Now, the Fourth Circuit’s ruling has re-affirmed USPTO’s initial decision.

“Here, we must affirm the district court unless it reversibly erred in finding both that the design TBL claimed is functional and that the same design is not distinctive,” wrote the Fourth Circuit.

Functionality

The Lanham Act’s broad definition of a trademark as “any word, name, symbol, or device, or any combination” used or intended to be used “to identify and distinguish” goods excludes functional designs.

In terms of the functionality of Timberlands, the court wrote:

“The features of the applied-for boot design as a whole do what these features are supposed to do in any good boot: they make it comfortable, they make it durable, they make it waterproof, and they make it suitable for its intended uses, including hiking through a variety of environments and pursuing some work projects for which toe protection is needed.”

TBL argued that the district court “misconstrued the features TBL sought to register in its application,” and therefore couldn’t make an informed decision on their functionality. In response, the Fourth Circuit said that even if it “failed to analyze the design as a whole or improperly strayed from the design TBL drew and described in its application,” the limited design provided still lacked distinctive meaning.

Secondary Meaning

With that, TBL attempted to establish a “secondary meaning” behind its design. However, the district court found that the company fell short of establishing the “formidable burden of proof” needed for such a claim.

In its consumer surveys, TBL used grayscale photographs of the boot instead of the drawn diagram it submitted in its application. Thus, it used “features of the boot’s design that were not part of the application to improperly suggest the boot was a Timberland,” the court said. TBL declined to challenge the court’s critiques of its consumer survey, instead pushing for Timberland’s advertising to hold more weight in determining secondary meaning. Once again, said the court, the advertisements used images of the entire boot—including its iconic wheat-yellow hue— beyond what was submitted in the application.

Despite the evidence of commercial success TBL provided via sales figures, the Fourth Circuit agreed with the district court that TBL did not provide sufficient evidence to prove that consumers bought the boots specifically because of the features marked in its application. And it similarly found the district court did not err when it said that widespread media coverage of Timberlands did not highlight the aspects of the boot design described in the application. Furthermore, attempts to plagiarize the boots did not prove secondary meaning. “Imitation of design features only to profit from the design’s functionality does not establish secondary meaning,” wrote the Fourth Circuit. In fact, the district court found that “[t]he saturation of the market with look-alike boots,” actually undermined TBL’s assertion of secondary meaning, and the appellate court said this analysis was not clear error.